David and Goliath: A Politico Story

The Capitol News Company owns POLITICO, a news website about politics in Washington. Capitol has issued a “Cease-and-Desist” letter to Stephen Gutowski, owner of The College Politico.

The gist of the letter is, “We own the word ‘politico’ and if you don’t hand over your domain (website) within ten days, we’ll sue you.” You can view the letter in its entirety here.

Trademarks are an important part of intellectual property protection. What good does it do for FedEx, McDonald’s or Nike to build their unique brand and establish their name if someone else can use that name to sell something similar, or even something completely different? Protecting a unique identifier such as a brand or company name is important. That is also why choosing a name that is unique is important, since these are easier to protect and less likely to be found invalid later on.

I am not a legal scholar, but some basic common sense should be applied whenever the issue of trademark infrigement is brought up (and yes, I understand that common sense is wholly uncommon in our time, especially in a court of law). In this case, we’re talking about the common sense concept of “enforceability.”

A little background:

Capitol News registered as a trademark the words “POLITICO” and “CAMPUS POLITICO” in December, 2006 and December, 2007, respectively. You can find this information at the US Patent and Trademark Office here. These are legally registered trademarks and are valid under US law.

There’s just one problem: With very, very few exceptions, it is not possible to simply trademark a word in common usage, even if it used rarely. Rather, there must be something unique and special about that word’s use with regard to the trademark. For example, United Parcel Service or UPS cannot trademark the word “parcel.” It can trademark the associated conjunctive use of “united,” “parcel” and “service,” and it can trademark a particular font, color combination and particular appearance of any of those words when used in commerce. It can also potentially trademark “UPS” or its UPS logo (and it has done so with both). It also trademarked the various areas in which it is widely known (“UPS Racing,” “UPS Express”). In other words, it can sue a business that used “UPS” or “United Parcel Service” in its name. I cannot sue anyone who simply uses “parcel,” simply because no one can trademark that word.

Were I to found a package delivery service called “Associated Parcel Shippers” or “APS,” UPS could not sue, simply because the terms, while similar and for similar businesses, are different enough to remove confusion. This is despite the fact that “APS” is only one character different from UPS and “Associated” is essentially the same as “United.” In another example, if I created a product called “Mark-UPS,” UPS could not prevent me from using “UPS” even though they have trademarked that character set. By placing “Mark” before it, I have changed its meaning entirely, preventing confusion.

However, if I were to use the word “parcel” or the three-letter combination “UPS” and had lifted the font and colors from the logo on the UPS website, that would be trademark infringement.

Essentially, the only way Capitol News could trademark the word “politico” would be to trademark its particular appearance and specific use. They have listed their particular purpose in the following method:

Newspaper reporting on the activities of the legislative and executive branches of the Federal government, officials and employees of the executive and legislative branches of the Federal government, members of Congress and their campaigns, and other matters of interest to people who work for or with the Federal government

– snip! –

Providing news and information via the Internet in the nature of current event reporting about the activities of the legislative and executive branches of the Federal government, officials and employees of the executive and legislative branches of the Federal government, members of Congress and their campaigns, and other matters of interest to people who work for or with the Federal government.

Certainly, The College Politico writes about politics and the goings-on in Washington. The word “politico” means “politician” or “relating to politics.” That term has existed in the English language since at least 1994, when my dictionary was published, and according to Dictionary.com, the word has been around since 1630. So unless someone wanted to use “politico” for an entirely different purpose than it’s definition, it would be impossible to not use the term in reference to the above listed trademark guidelines.

So the only way that Capitol News could have registred the trademark is by its appearance, which can be seen below:

(linked from the Politico website)

This is where it gets interesting: The operative language in the cease-and-desist letter is as follows:

“The Domain Name is confusingly similar to the POLITICO mark in that it wholly incorporates the “Politico” mark and merely adds the words “the College” at the beginning. The domain name is also confusingly similar to the CAMPUS POLITICO mark because the terms “college and “campus” have virtually the same meaning.

“The Domain Name resolves to an online publication entitled THE COLLEGE POLITICO ([i]sic[/i]), providing articles on political news and information. The banner at the top of the page reads, “The College Politico: From the Right Side of Campus,” suggesting the suggesting that the content of the site reflects a particular ideological perspective. For the same reasons as discussed above, the mark THE COLLEGE POLITICO ([i]sic[/i]) is confusingly similar to the POLITICO and CAMPUS POLITICO marks.”

The similarities listed are precisely why words in common usage cannot be easily trademarked. The trademark that Capitol News is clearly trying to protect is its use, in general, of “politico,” which is unenforceable since politico is a commonenglishword. Their trademarking “politico” as the word itself would be like T-Mobile trademarking “mobile,” or UPS trademarking “parcel,” a word in common usage but used infrequently. T-Mobile can trademark “T-Mobile,” UPS can trademark “UPS” and “United Parcel Service,” but not “parcel.” The same goes for “politico:” Capitol News can trademark “Campus Politico” to the exclusion of nearly all other use, but not “politico.” In and of itself, it is simply not unique enough. It is merely descriptive.

The only association between “CAMPUS POLITICO” and “The College Politico” is the supposed academic perspective of the two sites and Capitol News’ colloquiol usage of “campus” to refer to universities. However, “campus” is not synonymous with “college.” Corporate headquarters, schools at other levels (primary and secondary education), and government institutions, even some sports venues use the term “campus” to refer to their facility grounds. This since “campus” can refer to a multitude of government institutions, not just colleges and universities, the association between “campus” and “college” is not as ubiquitous and affirmative as Capitol News implicates. Further, there is little to indicate that the “Campus” section of the POLITICO website has anything to do with higher education, unlike The College Politico. Indeed, the only indication CAMPUS POLITICO has anything to do with higher ed is a series of linked news headlines from a third-party vendor, mtvU.

It becomes clear very quickly that POLITICO and CAMPUS POLITICO (which is really a sub-folder of POLITICO) are hard-news sites about politics. The College Politico, on the other hand, bears no resemblance what-so-ever to the Capitol News owned sites and makes no pretense of being a hard-news site or of being associated with POLITICO, CAMPUS POLITICO or Capitol News Company.

This is why words in common usage are generally more difficult to trademark, and must be differentiated in some manner. Trademarking a word or common phrase, such as “politico,” “parcel,” or “you’re fired” makes commerce virtually impossible, since businesses would be essentially unable to name themselves, their products and their brands. It is the uniqueness of a mark that requires protecting. Take another example: General Electric. There is nothing what-so-ever that is unique about the words “general” or “electric.” They are common words in common usage, just like politico, and trademarking them, even as a registered trademark, is virtually indefensible. Put the two words together and/or create a visually distinct logo, and it becomes a unique trademark, such as CAMPUS POLITICO.

The appearance of the cease-and-desist letter from Capitol News’ attorney is one of Goliath taking on David. The College Politico has almost no resources to fight a lawsuit, should Capitol News bring one, and no legal representation to assist in analyzing the implications of the letter and the trademark in question.

In this case, the Goliath has picked an easy target, The College Politico, to establish precedent. If they can prevail against Stephen Gutowski, they can use that to establish ownership over the word “politico” and force others to stop using it.

For more information, Ed Morrisey shares his personal experiences with trademark issues at Hot Air.

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[…] UPDATE: I want to make sure that I say thank you to everyone who has posted about this and is supporting me… here is the list so far (I’ll update it if more people jump in): Patterico Ace of Spades HQ Instapundit HotAir Vermontaigne Riehl World View Instapundit (making a point about the word pundit) Stop the ACLU Freedom & Liberty The Sundries Shack NewsBusters (it should be noted that they are merely reporting the facts and that I write for them) Daily Pundit Doubleplusundead Blogs For Victory The Minority Report (cross posted at Seeking Liberty) […]